law review - CadenAgro...que tu es. »), reprinted in THE ANCHOR BOOK OF FRENCH QUOTATIONS 242...

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law review

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VOLUME XX 2003 NUMBER x

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The Spirited Debate Over

Geographic Indications

Justin Hughes*

It should be borne in minds that, as is the case with trademarks, an unduly high level of protection of geographical indications and designations of origin would impede the integration of national markets by imposing unjustified restrictions on the free flow of goods.

– European Union Advocate General Francis Jacobs (1999)1

Tell me what you eat and I will tell you what you are.

--Anthelme Brillat-Savarin (1825)2

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* Assistant Professor, Cardozo School of Law; Hosier Distinguished Visiting Chair, DePaul College of Law. Research for this article was supported by summer research grants from Cardozo Law School, Yeshiva University, as well as time for work permitted by the Hosier Chair at DePaul. My thanks to Lynn LoPucki, Nuno Rocha de Carvalho, and Chrystel Garipuy for comments, suggestions, discussion, and/or research assistance on this manscript. For the remaining errors, I am, as Charles Dickens said, “hoping defects will find excuse.” Charles Dickens, A Poor Man’s Tale of a Patent, reprinted in JEREMY PHILLIPS, CHARLES DICKENS AND A POOR MAN’S TALE OF THE PATENT 15 (1984).

1 1999 ECJ LEXIS 1241 at *57 (opinion of Advocate General Jacobs). 2 ANTHELME BRILLAT-SAVARIN, PHYSIOLOGIE DU GOUT, IV (1825) (“Dis-moi ce que tu manges, je te dirai ce

que tu es. »), reprinted in THE ANCHOR BOOK OF FRENCH QUOTATIONS 242 (Norbert Guterman, ed., 1963).

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I. The Basics of Geographical Indications 10 A. The French system of appellations d’origine controlées 13

B. The American system of certification and collective marks 15

II. Pre-TRIPS International Legal Development of Geographical Indications 17 A. The Paris Convention for the Protection of Industrial Property (1883) (1967) 18

B. Madrid Agreement for the Repression of False or Deceptive

Indications of Sources of Goods (1891) 20

C. Lisbon Agreement on the Protection of Appellations of Origin and their International

Registration (1958) 21

D. The European Union’s Pre-1994 Harmonization of GI Protection 24

III. The TRIPS Provisions on Geographical Indications 30 A. Article 22(1) 32

1. The definition of a "geographical indication" 32 2. "essentiality" of the connection between product qualities and producing region 33

B. Article 22(2) 34

C. Article 23's additional protection of wines and spirits 36

D. Article 24 -- Limitations and Exceptions 37

E. Articles 23 and 24 further negotiations in the TRIPS Council 42

IV. Practical and Political Foundations of the Debate 47 A. How many regulators, how much control? 48

B. Of transaction costs and super-trademarks 51

C. Static or dynamic entitlement, traditional or modern? 55

D. Big profit for Old World producers? 61

V. Principled Foundations of the Debate 64 A. The drift of geographic words and the theory of the

“essential” land/qualities connection 64

B. Tokay, but not Travertine or Tiramisu 67

C. The mythology of unique product qualities 74

D. The essential land/qualities nexus was never needed

to support limited legal protection of geographical indications 80

E. Where words have become generic, there never was an essential

land/qualities nexus and legal protection of geographical indications

should only FOLLOW the rise of non-generic meaning. 85

F. Control of the evocative power of geographic words can be traded

for something more economically rational. 97

Conclusion 99

2003] THE SPIRITED DEBATE OVER GEOGRAPHIC INDICATIONS 3

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Not so long ago, exotic goods came from exotic places – if they came at all. People grew, cured, and cooked local foods; they built with local materials. The people in the village of Roquefort ate their cheese because that is what was available, not because they insisted on Roquefort cheese. Over time, each increase in world trade de-localizes consumption and, in the process, establishes reputations for goods produced in distant places. The trade of Phonecian sailors made purple-hued Phonecian cloth widely known – and coveted – in the ancient world. In the 15th century, swords from Bizen became known among the samurai class in Japan for their impressive strength and suppleness, just as the violins from Cremona became celebrated in Europe for the "warmth" of their sound. In each case, a geographic name became associated, far beyond the borders of that geographic location, with a product known for highly desirable and seemingly unique characteristics.3 This accretion of meaning seems to be much the same as traditionally happened with a trademark. With trademarks, it is the commercially, organizationally, and legally circumscribed group - the "house" -- that became identified with a product known for desirable characteristics. Frequently the two happen in tandem: not only did "Cremona" become famous for violins, but so did Stradivarius, Amari, and Guarneri – each name initially designating a single violinmaker and later a production house.4 Indeed, it is assumed by some that geographic designations were a historic precursor of trademarks.5 In either case, geographic or organizational source, people may try to free ride off the meaning of a particular word. The law offers radically different responses to such free-ridng, depending on when the law is asked to intervene and what the effects of the free-riding have been up until that moment. _________________________________________________________________

3 See generally CAROLINE BUHL, LE DROIT DES NOMS GEOGRAPHIQUES 323 (1997). 4 Stradivari Antonio (1644 1737); Stradivari Francesco (1671 1743); and Stradivari Omobono (1679 1742).

Amati Antonio (1555 1640); Amati Francesco (1640 - ?); Amati Hieronymus (1556 1630) - Amati Hieronymus (1649 - 1740); Amati Nicolo (1596 1684) - Amati Antonio Hieronymus (1555 -1630).

5 “In antiquity, geographic indications were the prevailing type of designation for products. With the development of the productive forces and production relationships, the use of other types of designations, intended to distinguish the goods of one manufacturer from the similar goods of other manufacturers, tended to spread, Thus, certain manufacturers names have become trade names." attributed to Dr. Grigoriev, speaking at the Symposium on the International Protection of Geographical Indications, Santenay, France, November 8-9, 1989, cited in M.C. Coerper, The Protection of Geographical Indications in the United States of America, 29 I.P. 232 (1990).


If the free-riding use of the word(s) has eliminated the geographical or organizational source from the meaning of the word(s) and given the words a product-descriptive meaning,6 the use typically will be allowed to stand. Escalator, cellophane, saki, camembert, thermos, swiss cheese – “genericization” works the same way on both geographical designations and trademarks.

If the law intervenes earlier and focuses on the activities of an individual, the result is likely to be different. Counterfeit consumer goods are the most blatant example of unacceptable free riding. Free-riding off geographic source names can also involve fraud and/or deceptions. In such situations, the free-riding is likely to be judged harshly against two concerns -- protecting consumers from misinformation and protecting producers from activities we judge "unfair." These two concerns provide, in varying degrees, the justifications for consumer protection, unfair competition, and trademark laws on both sides of the Atlantic.

These concerns also gave rise in Europe to separate law protecting geographic words under certain circumstances. The most important of such laws has been France's law of appellations d'origine controlées, which strictly controls use of certain geographic words by designated producers in designated producing regions, with little regard for consumer deception or confusion. Such laws have traditionally been anchored in the idea of terroir: that a particular land is a key input for a particular product. There is no direct English translation of the notion of terroir, but the idea is that the product’s qualities come with the territory. The idea reduces to an “essential land/qualities nexus”: the local producers are entitled to exclusive use of a product name because no one outside the locale can truly make the same product.

In the international arena, continental European countries have traditionally followed France's lead in seeking strong protection for appellations d’origine or "geographical indications."7 In fact, there are now dozens of multilateral and bilateral treaties creating obligations for different countries to protect geographical indications by one method or another. The United States has been entering such treaties for well over a century – going back to the _________________________________________________________________

6 By “product-descriptive meaning,” a mean a meaning that relates to inherent qualities and characteristics of the product, regardless of its geographic origin.

7 See, e.g. Bruce Lehman, Intellectual Property under the Clinton Administration, 27 G.W. J. INT’L L. & ECON. 395, 409 (1993-94) (attributing the TRIPS provisions to “strong French interest in appellations such as Champagne, Burgundy, and Chablis.”)


Paris Convention of 1883 and a 1910 bilateral treaty with Portugal to reserve the word “Porto” to Portugese producers while allowing other makers of fortified wine to continue to use “port” in the U.S. market. In the negotiations leading up to the 1994 TRIPS Agreement and the World Trade Organization (WTO),8 European countries pressed for strong protection of geographical indications. The United States and others resisted. The compromise forged in the TRIPS Agreement is (i) a low and loose level of protection for all geographical indications with (ii) heightened protection for geographical indications of wines and spirits (sought by Europe), subject to (iii) important exceptions (sought by the US). Along the way, the negotiations produced what political compromises so often produce: an agreement to put off the full battle for another day. WTO members committed themselves to continue "negotiations aimed at increasing the protection of individual geographic indications," but only for wines and spirits.9 So, in recent years, the US, Canada, Japan, Chile, and like minded countries -- a group called "JUSCANZ+" here10 -- have squared off against the EU about how to fulfill this obligation. The EU advocates a full-fledged international registration system that provides very strong protection of Old World agricultural producers. The JUSCANZ+ group advocate a less centralized, more market-driven approach. Typically, this takes the form of protecting geographical indications through certification and collective trademark systems, an approach _________________________________________________________________

8 See Final Act Embodying the Results of the Uruguay Round of the Multilateral Negotiations, Marrakesh Agreement Establishing the World Trade Organization, signed at Marrakesh (Morocco), April 15, 1994, Annex 1C, Agreement on Trade-Related Aspects of Intellectual Property Rights (hereinafter TRIPS) in THE RESULTS OF THE URUGUAY ROUND OF MULTILATERAL TRADE NEGOTIATIONS - THE LEGAL TEXT 365403 (GATT Secretariat, ed., 1994), also printed at 33 I.L.M. 81 (1994).

9 TRIPS, Article 24. 10 For better or for worse, an informal group of industrialized nations that typically includes Japan, the U.S.,

Canada, Australia, and New Zealand, hence “JUSCANZ” sometimes works in tandem and sometimes in opposition to EU proposals over a wide range of issues from intellectual property to climate change. See, e.g. Liz Barratt-Brown, Juicing the JUSCANZ, available at < www.climatenetwork.org/eco/cops/cop1/1.c1.juscanz.html> (describing the group’s organization against an OPEC proposal); see also Earth Negotiations Bulletin < www.iisd.ca/linkages/vol14/enb1429e.html> (describing comparative EU and JUSCANZ proposals on micro-financing for developing countries); George Archibald, Battle looms to define ‘secual rights,’ WASHINGTON TIMES, June 5, 2000, available at < www.dadi.org/fem_nuts.htm> (describing EU and JUSCANZ working together to oppose the “G-77” developing countries voting bloc at the UN); Terry Hall, EU move leaves a sour taste, Financial Times, July 19, 2002, at 20, col. 1. (describing how 2002 EU Wine Regulations, which touch upon all aspects of wine production for wines imported into the EU, raised protests from New Zealand, Brasil, the U.S., Australia, and Canada).


that is used in the United States, China,11 and Canada.12 There is a third group -- countries with well-known agricultural exports that are not wine and spirits: they want the Article 24 negotiations broadened to include all products. These include India and the Czech Republic, the latter seeking worldwide control of Budweiser. These discussions take place not just in the context of broader international intellectual property issues, but also in the context of long-standing, and possibly worsening, disagreement over trade in agricultural goods.13 The little commentary that exists on geographical indications tends to focus on the international political realities: that the US and EU, so frequently partners in intellectual property, clearly disagree on geographic indications. There has been very little sustained analysis of geographic indications on the New World side of the Atlantic.14 Yet potentially at stake is commercial control of a dizzying array of words and symbols: champagne, port, bourbon, camembert, Idaho potatoes, swiss cheese, Budweiser, sherry, saki, pictures of the Eiffel Tower or Golden Gate Bridge, dutch chocolate, shapes of bottles, budweiser, jasmine rice, coney island hot dogs, Chicago-style pizza, images of the Matterhorn or the Statue of Liberty, basmati rice, perhaps even images of Mozart and Benjamin Franklin.15 Based on ideas advocated in some quarters the list is disturbingly long. _________________________________________________________________

11 China amended its Implementing Rules of the Trademark Law in August 3, 2002, including amendments making their certification and collective mark law similar to the United States’. See Lehman, Lee, & Xu, China Intellectual Property Law Newsletter, August 26, 2002, at 2; Chiang Ling Li, New Chinese Trademark Law, TRADEMARK WORLD, TW 143(37), January 2002.

12 Canada’s trademark law provides for a specific category of “geographical indications” applications for non-Canadian wines and spirits only, but otherwise provides their protection under the regular trademark provisions. Canadian Trade Marks Act, amended effective January 1, 1996, sections 11.14-11.15. Other countries which seem to protect geographical indications through collective and certification trademarks include Belize (Registering Trademarks In Belize, TRADEMARK WORLD, TW 152(17), November 2002), Thailand (Are Unregistered Marks Protected in Thailand?, TRADEMARK WORLD, TW 152(17), November 2002).

13 See, e.g. William Drozdiak, French Winemakers See Themselves as 'Hostages' to Politics, THE WASHINGTON POST, November 10, 1992, at A19 (describing pre-WTO US-EU disagreement over oil seed subsidies and possible retaliatory US tariffs against French winemakers); Editorial, fair spirit, Financial Times (London), November 8, 1999 at 12 (describing EU’s strong stand against South Africa on wine geographical indications as “another example of the conflict between the EU’s rhetoric of free trade and the continuing protectionism in agriculture.”)

14 Worthwhile exceptions exist. I am thinking particularly of Albrecht Conrad, The Protection of Geographic Indications in the TRIPS Agreement, 86 T.M.R. 11 (1996) and Jim Chen, A Sober Second Look at Appellations of Origin: How the United States Will Crash France’s Wine and Cheese Party, 5 MINN. J. GLOBAL TRADE 29 (1996).

15 NORBERT OLSZAK, LES APPELLATIONS D’ORIGINE ET INDICATIONS DE PROVENANCE 34 (2001). Olszak gives as examples of indirect GIs the image of William Tell and the Cathedral at Strasbourg, the latter the


Geographic words are an efficient means to communicate both (a) a product's geographic origins, and (b) product characteristics besides geographic origin. The latter is the source of many geographic words becoming "generic."16 When people go into a restaurant chinois off the Champs-Elysees, they do not for a moment think that any of the food actually comes from China. Yet standing outside, they instantly know the characteristics of what will be served inside. Nine time zones away, the Californians who order french fries do not think the fried potatoes come from anywhere near the Champs-Elysees. We tend to overlook how such use of geographic words to describe non-geographic product characteristics is incredibly common.

Additionally, like trademarks, geographic words can generate their own utility through evocative and aesthetic uses, such that the geographic name becomes itself a desired characteristic of a good or service. These are typically uses of words which, in American trademark doctrine, would be 'fanciful' or 'arbitrary.’17 The evocative value of geographic words is most evident with geographic names of fictional or no-longer existent places: ATLANTIS waterproofing services,18 POMPEII game machines,19 and SHANGRI-LA for hotels.20

subject of a litigation in France in 1968. See also L. Wichers Hoeth, Protection of Geographic Denominations in the Netherlands, in PROTECTION OF GEOGRAPHIC DENOMINATIONS OF GOODS AND SERVICES 75 (Herman Cohen Jehoram ed. 1980). (giving Eiffel Tower, Cologne Cathedral, and Tower Bridge as examples).

16 Olszak, supra note __ at 16 (Certains terms géographiques are parfois perdu dans l’usage cette significantion precise pour deviner un nom commun désignant un type de produit . . . .“Some geographic terms lose sometimes their first signification, and become a common word used by people to designate a type of product. The use of this name becaomse then necessary to identify a product and cannot therefore be restrictec to products that originally come from the geographical place that the intitiaon proper name designates.”); ANDRÉ BERTRAND, LE DROIT DES MARQUES, DES SIGNES DISTINCTIFS ET DES NOMS DE DOMAINE, §3.44 at 146 (CEDAT, 2002) (Comme en matière de marques ou des indications de provenance, il est admis qu’une appellation d’origine peut perdre ce caractère par usage generalize.”); Black Hills Jewelry Mfg. v. Gold Rush, Inc., 633 F.2d 746, 751 (8th Cir. 1980) (“Black Hills gold” would be generic if it meant “three-color gold grape and leaf design jewelry wherever produced.”); See generally, Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976); King-Seeley Thermos Co. v. Aladdin Indus., 321 F.2d 577, 579 (2d Cir. 1963).

17 A classic example from trademark law might be "Alaska brand bananas." Because almost no adult would think that bananas can be/ would be grown in Alaska SeeIn re Nantucket, Inc., 677 F.2d 95, 97, n. 5 (C.C.P.A. 1982). But use of geographic words for evocative purposes could include geographic words which are considered “suggestive” in U.S. trademark doctrine.

18 U.S. Trademark 75888738


With these three purposes in mind – (1) to communicate geographic source, (2) to communicate (non-geographic) product qualities, and (3) to create evocative value – it is clear that the publicly acknowledged theory of geographical indications is that they serve a special combination of #1 and #2: to communicate a product's geographical source AND non-geographic qualities of the product that are related to its geographic origin. A goal of this Article is to scrutinize whether geographic words do or do not serve this special communicative purpose. In short, what do words designating geographic origins do when used in commerce and why - and when - would we want to create legally enforceable, exclusive rights in such words? Because of the limited literature in this area, some groundwork is necessary. Part I lays out some basics about geographical indications. Part II then sketches the development of protection of geographic words prior to the TRIPS Agreement. Part III presents the TRIPS provisions on geographical indications as well as the status of the negotiations mandated by TRIPS Article 24. The discussion then turns to an analysis of what animates the two sides in this debate. Part IV explores the practical and political foundations of the EU/JUSCANZ+ differences. These include a perception that geographical indications law benefit Old World producers much more than anyone else. Part V then moves to a deeper level, presenting six basic propositions that should inform any honest and reasonable discussion of further international standards on geographical indications: 1. Geographic words naturally migrate toward non-geographic product identification, i.e.

Chinese food, camembert, french fries, saki, neopolitan pizza, etc. This is part of a broader phenomenon that when technology and techniques migrate, applicable terminology tends to follow.

2. It is this very migration that explains the present form of the law of geographical

indications.

19 U.S. Trademark 75888738. 20 U.S. Trademark 74148286.


3. This migration in meaning suggests that the essential land/qualities nexus – the notion of terroir – is at least partly a myth. Indeed, present trends in geographical indications law shows increasing abandonment of the terroir idea.

4. At the same time, the essential land/qualities nexus was never necessary to support

limited protection of geographical indications, but such limited protection should not extend to all phrases.

5. Where a geographic word has become generic, its protection as a geographical

indication should only follow the return of non-generic, geographic meaning. Legal protection should reflect, not dictate, consumer understanding.

6. For those seeking additional protection of geographical indications, the actual goal is

control of geographic words for their evocative value in the marketplace. As to the last point, advocates of dilution doctrine and the general strengthening of trademark law are hardly unfamiliar with such goals. Inherent in this analysis is an endorsement of the position taken in Article 24 of TRIPS – that if a geographic word in any particular market principally describes non-geographic product qualities, allowing its re-propertization without a prior shift in popular meaning would harm consumer welfare. Where the geographic word has not yet drifted into meaning non-geographic product qualities, it should be acceptable to create limited intellectual property rights, even where the land/qualities connection is non-unique.21 The justification for this intellectual property protection is the same as with a trademark: we do not require a particular company to produce truly unique qualities in its product before it is eligible for a trademark. But extending such intellectual property to include ALL quality descriptive uses of a protected geographic word is usually counter to consumer interests. In other words, prohibitions on _________________________________________________________________

21 "Geographical indications" are usually understood as being geographic words that signal an essential or unique connection between the product's geographic origin and the product's established non-geographic qualities. I will call this the "essential land/qualities connection" and refer to such geographical indications as "essential connection GIs." But the EU now recognizes a two tier system: for the European Union a "geographical indication" is a geographical word that signals any connection between the product's originating region and the product's established non-geographic qualities or characteristics. In other words, the same product qualities may be produced by other regions or other production methods. See discussion, Part II, infra.


phrases like "Chianti style wine," "Dutch process" (for chocolate) and "méthode champenoise sparkling wine" are often inefficient and need to be decided on a case-by-case basis. At the end of the day, the politics of geographical indications is fueled by concerns that extend beyond consumer protection and even beyond protection of the producers' private economic concerns. In fact, French law conceptualizes the appellation d’origine system as part of rural law and “consumption law” more than as intellectual property.22 Staunch advocacy of geographical indications law often connects to issues of (subsidy-based) agricultural production23 as well as cultural heritage and preservation of a "way of life" in the face of globalization.24 In that vein, the European Union has recently raised the geographical indications issue in the World Trade Organization’s agricultural committee. Thus, geographical indicationssit at a bizarre crossroads of contested issues – intellectual property, free expression, and agricultural policy.

I. THE BASICS OF GEOGRAPHICAL INDICATIONS

There is a complex vocabulary for geographical indications reflecting how the issue has been conceptualized in different countries and at different times. The result is some ambiguity in the use of basic terms. I will use the following four ideas:25 • First, a geographic word is a noun or adjective that names/denotes a geographic place

(among other possible meanings); • Second, a geographic identifier or indication of source is any word, phrase, or symbol

that designates the place where a product was produced – regardless of reputation.26 So, _________________________________________________________________

22 See, e.g. DOMINIQUE DENIS, APPELLATION D’ORIGINE ET INDICATION DE PROVENANCE 1 - 8 (Dalloz, 1995) (Describing appellations d’origine system in French law and policy)

23 Chen, supra note at 29 (“France hopes to place the successful marketing of [appellations of origin] at the heart of its agricultural policy.”); Marie-Helene Bienayme, La protection des mentions geographiques par les appellations d’origine controlees, 237 REVUE DE DROIT RURAL (1996) (describing appellations laws as « an agricultural policy of the future. »)

24 Marie-Helene Bienamye, Deputy Director of France's INAO, speaking at a WIPO symposium, reported at 5 WIPR 333 (1991).

25 This is similar to, but has some differences with, the tripartite vocabulary introduced in Conrad, supra note __ at 13-14


"made in Pantagonia" on ROM chips would be a geographical identifier even though Pantagonia has no particular reputation for computer chips. A word could be a geographical identifier even when products from that region had a poor reputation, like "Yugoslav car" or "Soviet consumer goods." It should be clear that every geographic identifier is or includes a geographic word, but not vice versa (Avon for cosmetics is a geographic word, but not a geographic identifier; "hecho en Mexico" is a geographic identifier and includes a geographic word).

• Third, a geographical indication (GI) will be any word, phrase, or symbol attached to a

product that designates the place where a product was produced and that place has a reputation for producing that product with particular desirable qualities -- that is, a known land/qualities nexus. The qualities may result from human production factors, but must always result from at least some factors related to the climatological, geological, or other environmental characteristics of the place. It follows that every geographical indication is a geographical identifier, but not vice versa (“Industria Argentina” as applied to automobiles is a geographic identifier, but not an geographical indication; PARMA on ham from that Italian region is a geographical indication and, also, a geographic identifier).

There are two types of land/qualities connections in GI law as it has developed in some countries. If the product has known qualities that come essentially and/or uniquely from the producing region, we have the French appellation d'origine (denominazione de Origine in Italy or denominações de origem in Portugal). This is the traditional core of GI jurisprudence. But the French system has not been uniformly adopted in Europe. In particular, German law has had a looser system of "indications of provenance" in which a region’s product has a reputation for certain qualities, but the product qualities are not claimed to be unique to the producing region. I will call such cases "non-unique land/qualities connection" GIs. The European Union now has a two tier system for GIs covering both kinds. This is discussed in Part II.D. Geographical indications usually are or include geographic words, names or adjectives denoting places; the geographic word is often coupled with the generic term for the product

26 These are sometimes called indications of source, but I am not using that phrase because

“indication of source” is often used in distinction to “geographical indication.” See, e.g. Leigh Ann Lindquist, Champagne or Champagne: an Examination of U.S. Failure to Comply with the Geographical Provisions of the TRIPS Agreement, 1998 Ga. J. Int’l & Comp. L. 309, 312.


(Irish whiskey, Parma ham). Sometimes the word stands alone (Scotch). Typically, the places are either towns, villages, or sub-national geographic regions: states (Idaho potatoes), provinces, departments (Cognac), or counties (Bourbon). Although we think of the geographical indication as the name of the place that produces the good, some of the most famous GIs are actually the ports of embarkation for the producing region – Porto wine, Bourbon whiskey, and Bordeaux wines all take their name from the region’s shipping port, not the region. Similarly, Parmesan cheese, named for Parma, originated – and is still produced best – in the Reggio nell’Emilia district which is across the Enza River from the district (and city of) of Parma. The cheese is now formally called Parmigiano-Reggio and produced in both districts (as well as some other contiguous areas).27 The Parmesan/Parmigiano-Reggio example points to another issue about geographical indications: the language of the indication. In the U.S., “Parmesan” is considered a generic word, but the latter hyphenated name is a protected GI under our certification mark law. The most curious example of this problem is probably the Czech town of Ceske Budejovice, which seeks global control of the German adjectival name for itself. The German adjective is Budweiser. German courts have found this to be perfectly reasonable; an Italian court thought this was a little suspicious. It may be difficult to determine the exact boundaries of the region "indicated," but too large a region undermines the likelihood of a legitimate essential connection GI --- because production factors spread over a very large contiguous region are unlikely to be (a) consistent across the region and (b) still unique to that region. "American wheat" presumably has little or no chance to succeed as an essential connection GI because any production factors over such a broad region that are consistent are probably not unique (against wheat production factors in Australia, Canada, Russia, etc.). Nonetheless -- and despite resistance to the idea historically28 _________________________________________________________________

27 PAMELA SHELDON JOHNS, PARMIGIANO 12 – 13 (1997) 28 For example in 1975, the European Communities argued against Germany's claim that "Sekt" was an

indirect geographical indication, partly on the grounds that "the Federal [German] Government gave no example demonstrating that the territory of a whole country may also be the subject of an indirect indication of origin," EC v. Germany, Judgement, supra note ___ at 185. French law does not permit country names to be protected appellations d’origine and, according to the California Wine Export Program, country names like “American” do not qualify as geographical indications under EU wine doctrine. See California Wine Export Program, 2000 European Union Wine Labeling Regulations Memo at 2-3 (on file with author) [hereinafter California Export EU Wine Labeling Memo].


-- names of countries can be protected as geographic indications in at least some legal systems, i.e. Canadian whiskey, Irish whiskey, Colombian coffee, or Swiss chocolate. Occasionally geographic indications are terms or identifiers that are not names of places. The best example is the word "claret" as used in the British Isles. Derived from the French "clairet,” in Britain "claret" came to refer exclusively to red Bordeaux wines.29 A term like "claret" that is not a place name (or adjectival derivative) but is linked to a particular place is considered an "indirect geographic indication." Another example of an indirect geographical indication could be a bottle style that has been historically used for wine from one particular region and, thereby, becomes identified with that wine. Some commentators believe that such indirect geographic indications could even include "depiction of landmarks, familiar landscapes, heraldic signs, [and] well-known persons,"30 a disturbing extension of the concept for anyone concerned about either evocative use of symbols in advertising or free expression in general.

A. The French system of appellations d’origine controlées

Although there were some laws in France, Portugal, and Tuscany controlling wine labeling as early as the 14th and 15th century31 and the vineyards of Medoc were delimited and classified under the Second Empire in 1855,32 France’s influential system for protection of appellations was not established until well into the 20th century. The first modern French law to combat fraudulently labeled wines was passed in 1905, but the first government committee on appellations of origin for wines and eaux de vie was not established until 1935. In 1947, that committee became the Institut National des Appellations d’Origine (INAO),33 which is now part of the Ministry of Agriculture. _________________________________________________________________

29 EC v. Germany, Opinion of Advocate-General Warner, supra note ___ at 204. 30 Conrad, supra note ___ at 11-12. (giving examples of the Eiffel Tower {France}, the Matterhorn

{Switzerland} and Mozart {Austria}). 31 Buhl, supra note __ at 331; Olszak, supra note ___ at 51. 32 Olszak, supra note ___ at 6; A. J. LEIBLING, BETWEEN MEALS: AN APPETITE FOR PARIS 160 (1959) 33 See Code de la Consommation, Article L. 115-19 at Code Rural, Article L. 641-5 (establishing INAO) ;

See also Olszak, supra note ___ at 10. A national committee on appellations d’origine for cheese was not established until 1955. Olszak, supra note ___ at 11.


The French system of appellations d’origine controllée (AOC) is founded on idea of terroir. “Terroir” has no direct English translation, but it has the same root as territory” and the French notion is simple: the product’s qualities come with the territory. As one Australian wine critic describes it:

terroir . . . translates roughly as ‘the vine’s environment,’ but has connotations that extend right into the glass: in other words, if a wine tastes of somewhere, if the flavours distinctly make you think of a particular place on the surface of this globe, then that wine is expressing its terroir.34

Beliefs about terroir run deep, a subject we will turn to in Part V.C. In addition to “terroir,” I will use the idea of an “essential land/qualities nexus.” French statutory law protects an appellation d’origine controlée (AOC) not just against unauthorized uses on the relevant products, but also against any use “likely to divert or weaken the renown of the appellation d’origine.”35 This standard seems roughly similar to the protection accorded famous trademarks under U.S. federal dilution law. The INAO regulates not just the geographic boundaries for each wine AOC, but all “conditions of production,” including the grape varietals, hectare production quotas, natural alcohol content during vinification,36 permitted irrigation, etc. As described below, the INAO applies the same regulatory rigor to AOC cheeses and fruit-based spirit37 (the second and third largest AOC product categories). The INAO works with “interprofessional” committees organized around specific products.38 Based on recommendations from the interprofessional committees, the INAO establish new appellations controlées.39 _________________________________________________________________

34 MAX ALLEN, SNIFF, SWIRL, & SLURP: HOW TO GET MORE PLEASURE OUT OF EVERY GLASS OF WINE 24 (London, 2002); See also Id. at 29 (explaining that between Alsatian Pinto Gris and Italian Pinot Grigio white wines “the difference, of course, comes almost solely from the terroir”). For a cyberspace version of the “terroir” story, see www.beaucastel.com (“terroir” page).

35 “[L]e nom géographique qui constitute l’appellation d’origine . . . ne peuvent être employé . . . pour aucun autre produit ou service lorsque cette utilisation est susceptible de détourner ou d’affaiblir la notoriété d’appellation d’origine. » Article L. 115-5, Code de consommation. Discussed infra ____.

36 Id. at 10. 37 See, e.g. « L’adjonction d’eau ou de colorants est interdite,” LE MONDE, August 20, 2002, at 8 (quoting

requirements for the « calvados domfrontais » AOC issued on December 31, 1997.) 38 For example, « Le Comité Interprofessionnel du Vin de Champagne » was organized in 1941. The

« Interprofession des appellations cidricoles » organizes producers of cider, calvados, and other apple-


In the context of wines, appellations controlées exist in a rigorous framework for the control of all vocabulary for commercial labeling. For example, the EU reserves to its own producers the term “table wine” (“vin de table”), which is a broad category of lesser wines, but still denotes quality production, i.e. there cannot be Australian or Argentine “table wine” sold in the EU. Table wines are, in turn, prohibited not just from using protected appellations and confusing similar names, they are also prohibited from using many general terms. In other words, in France, a table wine cannot use “clos,” “tour,” “mont,” or “moulin” in its name because these are considered evocative of appellation or high-end wines.40

B. The American system of certification and collective marks

In contrast to a separate system for protectin appellations, many countries subsume protection of geographical indications under trademark law, particular through the categories of “certification marks” and “collective marks.” A collective mark – a phrase coined by 1946 Lanham Act – is a trademark “used by the members of a cooperative, an association, or other collective group or organization,”41 a definition that could easily include a foodstuff producers’ cooperative or trade association which imposes its own standards.42 Certification marks are used to “certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of . . .[the] good or service.”43 They are owned by a certifying entitiy that does not itself produce the applicable goods or service. Examples include the “Good Housing” seal of approval, the “UL” mark (Underwriters’ Laboratory), and various trademarks used to designate kosher foods.

based spirits. See Jean-Jacques Lerosier, In Normandie, des pommes, des poires, et des appellations contrôlées, LE MONDE, August 20, 2002, at 8. There are committees organized for various types of wine, cheeses, « fragrant plants, » beets, flax, cider, tartar, semolina, etc. See Le Comité Interprofessionnel du Vin de Champagne, paper on file with the author.

39 Id. at 11; Lerosier, supra note ___ (town of Domfrontais given AOC for calvados on December 31, 1997 and AOC for poiré [apple and pear-based spirit] on December 12, 2001.)

40 Olszak, supra note __ at 45. 41 15 U.S.C. § 1127 42 In fact, McCarthy gives as one example of a likely collective mark holder “an agricultural cooperative of

sellers of farm produce.” McCarthy, § 19.99 at 19-223. 43 15 U.S.C. § 1127.


The certification mark protects a geographical indication when it is used to “certify regional . . . origin.” For example, the State government of Idaho has three registered certification marks protecting different versions of IDAHO POTATOES;44 the state government permits these trademarks to be used for only one species of potatoes - the Russet Burbank. Other types of potatoes actually grown in Idaho may not be labeled "Grown in Idaho." The commission has successfully persuaded at least one court that the IDAHO POTATOES marks convey a land/qualities nexus in "that most consumers believed they were purchasing Russet Burbanks when buying ‘Idaho' potatoes."45 Other examples of registered certification marks include PARMIGIANO-REGGIANO, ROQUEFORT, STILTON, and CALIFORNIA CHEESE for cheese, PARMA for ham, DARJEELING for tea, WASHINGTON for apples, and the (Florida) SUNSHINE TREE for citrus.46 To maintain USPTO registration of a certification mark, the mark holder must maintain control over use of the mark; must not be a manufacturer of the certified products itself; must not allow it to be used for anything but certification of the relevant products; and must not discriminately “refuse to certify . . . good or services . . . [that] maintain the standards or conditions which such mark certifies.”47 But, unlike the INAO, as long as the certification standards are applied non-discriminatorily, the USPTO does not care what the certification standards are. Similarly, the USPTO has absolutely no grounds to patrol the standards for _________________________________________________________________

44 U.S. Trademark 72394105 (Premium Packed Idaho Potatoes); U.S. Trademark 73575663 (WASHINGTON, owned by Washington State Apple Advertising Commission); U.S. Trademark 74189696 (Grown in Idaho Idaho Potatoes); U.S. Trademark 75258662 (Famous Idaho Potatoes, Famous Potatoes Grown in Idaho).

45 See Idaho Potato Comm'n v. Russet Valley Produce, Inc. (In re Russet Valley Produce, Inc.), 904 P.2d 566, 567 (Idaho 1995) (punishing a licensee for improperly shipping "non-Russet Burbank potatoes" with the "Idaho" label).

46 U.S. Trademark 74398233 (PARMIGIANO-REGGIO, owned by Consorzio del Formaggio Parmigiano-Reggio) U.S. Trademark 71624872 (ROQUEFORT, owned by community/municipality of Roquefort); U.S. Trademark Registration No. 1,959,589 (STILTON certification mark owned by Stilton Cheese Makers’ Association); U.S. Trademark 73421053 (REAL CALIFORNIA CHEESE, owned by California Department of Agriculture; U.S. Trademark Registration No. 2,014,628 (PARMA, certification mark owned by Consorzio del Prosciutto di Parma); U.S. Trademark Registration No. 1,632,726 (DARJEELING certification mark owned the Tea Board of India Corporation) U.S. Trademark (THE FLORIDA SUNSHINE TREE and FRESH FROM THE SUNSHINE TREE owned by Florida Department of Citrus).

47 15 U.S.C. § 1064(5).


membership in a collective using a collective mark – collective marks are not even subject to the statutory limitations of certification marks.48 Both the USPTO and at least one American court have held that certification marks can, like other trademarks, exist as a matter of common law without USPTO registration – a position also endorsed by the Restatement.49 In a case concerning COGNAC as an unregistered certification mark, the T.T.A.B. concluded that the critical issue is whether control is being exercised over the use of the word: the certification mark rights exist “if the use of a geographical indication is controlled and limited in such a manner that it reliably indicates to purchasers that the foods bearing the designation com exclusively from a particular region.”50 Similarly, there is no reason that common law collective marks do not exist. Thus – a point generally overlooked by Europeans – if an appellation or denominazione is controlled locally in France or Italy, the producers export to the U.S., and no one else in the U.S. is using the geographic words for the same product, the appellation or denominazione has common law rights under U.S. trademark doctrine.

II. PRE-TRIPS INTERNATIONAL LEGAL DEVELOPMENT OF GEOGRAPHICAL INDICATIONS

From the late 19th century forward, concern for geographical identifiers made its way into several multilateral agreements and many more bilateral agreements. The United States entered into a bilateral agreement with Portugal on the use of Porto as early as 1910 and there _________________________________________________________________

48 And in many circumstances, “the only possible distinction” between the two kinds of marks “is one of form.”:

That is, as to a collective trade or service mark, the sellers are members of an organization with standards of admission, while as to a certification mark, sellers are nor members of an organization, but their products are certified according to set standards. This means that creating an “association” and calling a mark a “collective” mark may be a way to avoid the strict duties which Lanham Act §14(e) applies to certification marks.

McCarthy, supra note ___, §19.99 at 19-224. 49 Florida v. Real Juices, 330 F. Supp. 428 (M.D. Fla. 1971) (unregistered SUNSHINE TREE valid

certification mark for citrus from Florida); Institut National des Appellations d’Origine v. Brown-Forman, 47 U.S.P.Q.2d 1875 (T.T.A.B. 1998) (COGNAC valid unregistered certification mark for purposes of opposing trademark registration using “Cognac”); RESTATEMENT (THIRD) OF UNFAIR COMPETITION, § 11 (1995).

50 Institut National des Appellations d’Origine v. Brown-Forman, 47 U.S.P.Q.2d at 1885.


was a complex web of such treaties among European states.51 But for our purposes, three multilateral agreements and the European Union’s own internal efforts at geographical indications law set the stage for both the present international standards and the present debate.

A. The Paris Convention for the Protection of Industrial Property (1883) (1967)

The Paris Convention on Industrial Property was established in 1883 and revised several times in the twentieth century.52 In 1994, its substantive standards were integrated into the TRIPS Agreement. Although Article 1 provides that the Convention includes within its coverage "indications of source or appellations of origin,"53 the actual treaty obligations are cast at the more general level of what I have called geographical identifiers. The Convention is structured in such a way that the substantive obligations related to geographic identifiers in Articles 10 and 10bis are derivative on obligations regarding trademarks.54 Article 9 of the Convention requires countries to seize "on importation" goods unlawfully bearing a trademark or trade name.55 If seizure is not available as a matter of domestic law, then Article 9 obligations may be met "by prohibition of importation or by seizure inside the country."56 Article 10 then provides:

"The provisions of the preceding Article [Article 9] shall apply in case of direct or indirect use of false indication of the source of the goods or the identity of the producer, manufacturer, or merchant."57

_________________________________________________________________

51 Buhl, supra note __ at 340 – 341 (listing some of France’s bilateral treaty’s prior to EU competence in this area).

52 For an account of the origins of the Paris Convention, see STEPHEN P. LADAS, I PATENTS, TRADEMARKS, AND RELATED RIGHTS: NATIONAL AND INTERNATIONAL PROTECTION, chapter 4 (1975).

53 Paris Convention for the Protection of Industrial Property, opened for signature Mar. 20, 1883, art. 1(2), 21 U.S.T. 1583, 828 U.N.T.S. 305 (revised at Brussels on Dec. 14, 1900, at Washington on June 2, 1911, at The Hague on Nov. 6, 1925, at London on June 2, 1934, at Lisbon on Oct. 31, 1958, and at Stockholm on July 14, 1967 and as amended on September 28, 1979.) [hereinafter, "Paris Convention"]

54 Article 10ter also provides procedural components for enforcement of unfair competition and false indications: Article 10ter(1) requires a member state to provide "appropriate legal remedies" to nationals of other member states, while 10ter(2) seeks to ensure that "federations and associations representing interested industrialists, producers, or merchants" to enforce Article 10 and 10bis rights.

55 Paris Convention, art. 9(1). 56 Paris Convention, art. 9(5) (emphasis added). 57 Paris Convention, art. 10(1).


The last disjunctive phrase (or the identity of the producer, manufacturer, or merchant) makes it clear that the prior phrase ("false indication of the source of the goods") means geographic source. Neither Article 10 nor any other provision of the Convention defines an "indication," so apparently no link between product qualities and producing region is required. In other words, the Article 10 obligation appears to require legal protection of geographic identifiers generally: the provisions apply to "Made in Japan" or “Industria Brasiliera” on any goods as well as ROQUEFORT on cheese. Article 10 dates back to the original Paris Convention and is now an obligation on all WTO member through Article 2(1) of the TRIPS Agreement. The Paris Convention also includes Article 10bis, which provides that member countries of the Paris Convention are generally "bound to assure to nationals of such countries effective protection against unfair competition"58 and specifies that "[a]ny act of competition contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition."59 Article 10bis(3) also provides that the following shall be prohibited:

"indications or allegations the use of which in the course of trade is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity of the goods."60

On its face, Article 10bis(3) could be interpreted to apply to GIs, but its drafting history indicates otherwise. The Article 10bis language was added to the Convention at the 1958 Lisbon Revision Conference and originated in a proposal from the Austrian delegation. The original language proposed by Austria was to create a prohibition where the indication was "liable to mislead the public as to the nature, the origin, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity of the goods." The United States insisted that "the origin" be removed from the provision, strongly suggesting that _________________________________________________________________

58 Paris Convention, art. 10bis(1) 59 Paris Convention, art. 10bis(2) 60 Paris Convention, art.10 bis(3)(3). Article 10bis(3) appears generally aimed at false or misleading

advertisng vis-a-vis competitors, i.e. "allegations" in 10bis(3)(2) and (3) and "acts [which] . . . create confusion . . . with the establishment, the goods, or the . . .activities, of a competitior" (10bis(3)(1)), but the 10bis(3)(3) inclusion of "indications: seems to return to issues of product labeling.


10bis(3) should not be interpreted as creating a treaty obligation vis-a-vis the land/qualities nexus of GIs.61

B. Madrid Agreement for the Repression of False or Deceptive Indications of Sources of Goods (1891)

The originally narrow scope of Article 10 of the Paris Convention may have helped fuel a prompt return to the subject of geographical indications at the end of the 19th century, producing the Madrid Agreement of 1891.62 As with the Paris Convention, additional diplomatic conferences have met to amend the Madrid Agreement. Although the treaty is now more or less a diplomatic dead-end, it shows the development of thinking about legal protection of geographic identifiers. The Madrid Agreement alters the standards in the Paris Convention in a few ways. First, whereas Paris Convention Article 10 requires false indications to be seized on importation, Article 1(1) of the Madrid Agreement provides that "[a]ll goods bearing a false or deceptive indication by which . . . a place . . . is directly or indirectly indicated as being the country or place or origin shall be seized on importation . . ."63 Strictly speaking, this marks an expansion of liability to include the effect of the designation on the consumer.64 Second, Article 3bis, which was added to the Madrid Agreement at a diplomatic conference in 1934, expanding the commitment to fight false or deceptive marks or source indications “appearing on signs, advertisements, invoices, wine lists, business letters or papers, or any other communication." This marks a shift from a focus on deceptively marked goods to fighting deception throughout channels of commerce.65 _________________________________________________________________

61 See J. Thomas McCarthy and Veronica Colby Devitt, Protection of Geographic Deonominations: Domestic and International, 69 TMR 199, 203 (1979).

62 Madrid Arrangement on the suppression of false or misleading indications of provenance of April 14, 1891, 828 U.N.T.S. 163 (last revised at Stockholm on July 14, 1967)

63 Note that this may expand the Paris Article 10 coverage less than first appears because Paris Article 10 already applied to "indirect use of false indication of the source of the goods" which would seem to capture many, if not most, practices that could be called deceptive, but not directly false.

64 A standard of a “false” designation seems to require less analysis of the consumer’s reaction to the designation in the sense that the plain meaning of the word renders it true or false in relation to the goods to which it is attached.

65 It is worth noting that instead of using the "false or deceptive" formulation of Article 1(1), the standard in Article 3bis is "capable of deceiving the public," arguably reaching an wider field of messages, just as likelihood of confusion is a looser standard than confusion and likelihood of dilution is a looser standard than (actual) dilution. The official French version of the text has as or more significant a difference in the


But most importantly for our purposes, the Madrid Agreement marked the first time wine-specific rules entered a modern multilateral treaty. Article 4 provides:

The courts of each country shall decide what appellations, on account of their generic character, do not fall within the provisions of this Agreement, regional appellations concerning the source of products of the vine being, however, excluded from the reservation specified by this Article.

In other words, while the Madrid obligations applied to geographical identifications, Article 4 permits a national court determination that a geographical identifications/identifier has become generic within that country, effectively triggering a treaty-level reservation concerning that word. But Article 4 then immediately eliminates this possibility vis-a-vis terms of viniculture, i.e. Chianti, Burgundy, Port, etc.

C. Lisbon Agreement on the Protection of Appellations of Origin and their International Registration (1958)66

Neither the Madrid Agreement nor the Paris Convention introduce a full-blown notion of "geographical indications." It was not until 1958 that concerned countries drafted a multilateral convention to create international registration of geographical indications similar to the system for international registration of trademarks established at the end of the 19th century. The Lisbon Agreement focuses directly on geographical indications, finally using the term appellations of origin in a multilateral instrument. Article 2(1) of the agreement provides:

Article 1(1) standard ("une indication fausse ou fallacieuse") versus the Article 3bis standard (les "indications . . . susceptibles de tromper le public"). Text from the World Intellectual Property Organization website, at or . Similarly, the Spanish text uses "una indicación falsa o engañosa" in Article 1(1) and "las indicaciones que . . . sean susceptibles de equivocar al público" in Article 3bis. See

66 Lisbon Agreement for the Protection of Appellations of Origin and their International Registration of October 31, 1958 (as revised at Stockholm on July 14, 1967, and as amended on September 28, 1979), 923 U.N.T.S. 189 (English text of Stockholm revision begins at 215); See also WIPO Pub. No. 264(E) at .


“appellation of origin” means the geographical name of a country, region, or locality, which serves to designate a product originating therein, the quality and characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors.

Note two things about this foundational definition. First, the definition would seem to exclude indirect geographical indications (for example, bottle shapes) and words, phrases, and symbols which serve as geographical indications, but are not geographic names (like claret for Bordeaux wines or vinho verde for certain Portugese wines). Second, the definition requires that the land/qualities conection be exclusive or essential. I believe that these two terms should be interpreted as the same (OR so overlapping as to leave us without any cases that fall under one and not the other). The system envisioned by the Lisbon Agreement is both simple and rigorous. Each country decides how its domestic law will determine that a geographical indication is protected (whether judicial or administrative process). Once a geographical indication is protected in its country of origin and duly registered with the World Intellectual Property Organization (WIPO), all member countries of the Lisbon Agreement are required to protect that GI within their own borders. The scope of protection is broad. Article 3 expressly provides:

"Protection shall be ensured against any usurpation or imitation, even if the true origin of the product is indicated or if the appellation is used in translated form or accompanied by terms such as 'kind,' 'type,' 'make,' 'imitation,' or the like."67

Thus, the holder of the geographical indication has the right to stop any use in a descriptive phrasing such as "Port-like fortified wine" or "imitation Chianti." It is unclear what the extent of protection against “usurpation” entails. As described above, French statutory law protects as appellation against any use “likely to divert or weaken the renown of the appellation d’origine,”68 a standard which is one possible understanding of

(under Documents, Texts of WIPO-Administered treaties, Lisbon agreement) (visited April 13, 2000)

67 Lisbon Agreement, art. 3. 68 “[L]e nom géographique qui constitute l’appellation d’origine . . . ne peuvent être employé . . . pour aucun

autre produit ou service lorsque cette utilisation est susceptible de détourner ou d’affaiblir la notoriété d’appellation d’origine. » Article L. 115-5, Code de consommation. Discussed infra ____.


protection against “usurpation.” Whether or not protection against “usurpation” is this French standard and/or something similar to U.S. dilution law, it unquestionably decouples legal protection from any kind of consumer confusion. This “usurpation” standard has appeared in bilateral agreements concerning geographical indications where at least one country is an EU member,69 but was not adopted in TRIPS. While a country might determine that an "appellations of origin" is protected through judicial or bureaucratic processes, the Lisbon Agreement leaves no room for anything short of an "appellation" system. Article 1(2) makes it clear that the treaty obligation extends only to "appellations of origin of products . . . recognized and protected as such in the country of origin" (emphasis added)70 Protecting appellations as certification or collective trademarks appears to be inadequate. On the key issue of genericness, the Lisbon Agreement appears to permit member countries to decline to provide protection to any GI which has become generic in that country. Article 6 provides that once a GI has been recognized in a country pursuant to the treaty regime, it can never be declared a generic term.71 But recognition in country A of country B’s claimed GI may be initially refused pursuant to Article 5(3).72 _________________________________________________________________

69 See, e.g. Article 5(2) of the Convention between the French Republic and the Spanish State on the protection of Designations of Origin, signed in Madrid on June 27, 1973 (Journal Officiel de la Republique Francais, April 18, 1975, at 4011), discussed extensively in Exportur SA v. LOR SA and Confiserie du Tech, European Court of Justice, Case C-3-3/91, 1992 E.C.R. 5529.

70 The official French text is arguably more demanding, requiring that the protected appellation of origin be "reconnues et protégées à ce titre dans le pays d'origine," arguably meaning that the phrase "appellations d'origine" or a close linguistic translation must be used in the country's domestic legal regime. See

The Spanish text seems to more closely follow the "as such" construction in English ("denominaciones de origen de los productos de los otros países de la Unión particular, reconocidas y protegidas como tales en el país de origen"). See

71 "An appellation which has been granted protection in one of the countries of the Special Union pursuant to the procedure under Article 5 cannot, in that country, be deemed to have become generic, as long as it is protected as an appellation of origin in the country of origin." Lisbon Agreement, art. 6.

72 Which provides that "(3) The Office of any country may declare that it cannot ensure the protection of an appellation of origin whose registration has been notified to it, but only in so far as its declaration is notified to the International Bureau, together with an indication of the grounds therefor, within a period of one year from the receipt of the notification of registration, and provided that such declaration is not detrimental, in the country concerned, to the other forms of protection of the appellation which the owner thereof may be entitled to claim under Article 4, above." The reference to Article 4 establishes that this kind of admininstrative "reservation" vis-a-vis a particular GI will not automatically denude the GI of


As of July 15, 2001, there were only 20 states which are parties to the Lisbon Agreement and participating in its WIPO-administered registration system. This group includes nine European countries, only three of which are EU members (France, Portugal, and Italy); six states on the African continent (Algeria, Burkina Faso, Congo, Gabon, Togo, and Tunisia), four countries in the Americas (Mexico, Cuba, Costa Rica, and Haiti), and Israel.73

D. The European Union’s Pre-1994 Harmonization of GI Protection

In addition to these three global treaties, there was recognition of geographical indications in other multilateral and bilateral agreements pre-dating TRIPS. For example, in 1993 Andean Group countries recognized the right to exclusive use of proper “appellations of origin.”74 But perhaps the most important multilateral development of geographical indication principles prior to TRIPS was European Community Council Regulation 2081/92, on the protection of geographical indications and designations of origin for agricultural products and foodstuffs (the "1992 Origin Regulation").75 The 1992 Origins Regulation does not apply to wines or spirits, where the rules on geographical indications are embedded in a web of broader industry regulations dating back at least to 1962. The most important pieces of that regulatory framework for our purposes is Council Regulation No. 1493/1999 of May 17, 1999 (“1999 Wine Regulation),76 recently supplemented by 2002 Wine Regulations. But for purposes of understanding pre-TRIPS developments and the basics of EU law on geographical indications, let us start with the 1992 Origins Regulation.

possible protection under the separate treaty obligations arising from the Paris Convention and the Madrid Agreement. See Lisbon Agreement, art. 4. But see Conrad, supra note ___ at 26 (". . . the Agreement does not make exceptions for terms that have already become generic in some member countries.")

73 Current membership list available from WIPO at .

74 See CARLOS M. CORREA, INTELLECTUAL PROPERTY RIGHTS, THE WTO AND DEVELOPING COUNTRIES: THE TRIPS AGREEMENT AND POLICY OPTIONS 114 (2000).

75 [1992] 35 O.J. L208/1 [hereinafter "1992 Origins Regulation"]. According to Annexes I and II of the Regulation, it harmonizes EU law for beer; natural mineral waters and spring waters; beverages made from plant extracts; bread, pastry, cakes, confectionery, biscuits and other baker's wares; natural gums and resins; hay; and "essential oils." Id. at 208/8. The Regulation "shall not apply to wine products or spirit drinks." Id. at 208/2.

76 Council Regulation (EC) No. 1493/1999 of 17 May 1999 on the common organization of the market in wine, [1999] O.J. L.197/1 [hereinafter “1999 Wine Regulation”]. Available at


Article 2(2) of the EU Origin Regulation gives us two definitions as described in Part I. The first is "designations of origin":

(a) designation of origin means the name of a region, a specific place or, in exceptional cases, a country, used to describe an agricultural product or a foodstuff: – originating in that region, specific place or country, and

– the quality or characteristics of which are essentially or exclusively due to a particular geographical environment with its inherent natural and human factors, and the production, processing and preparation of which takes place in the defined geographical area;

(Emphasis added) Thus, designations of origin are the romantic core of the idea of geographical indications. There is a requirement of an essential connection between the land and the product's qualities – a requirement now manifested in TRIPS Article 22. This is the French notion of terroir. The EU Origins Regulation has a second kind of GI is broader:

(b) geographical indication means the name of a region, a specific place or, in exceptional cases, a country, used to describe an agricultural product or a foodstuff: – originating in that region, specific place or country, and

— which posses a specific quality, reputation, or other characteristics attributable to that geographical origin and the production and/or processing and/or preparation of which takes place in the defined geographical area.

Thus, what the Origins Regulation calls a "geographical indication" is a product with a lesser link between its qualities and the land: the requirement is that the qualities be "attributable" to the product's geographical origin, but not necessarily "exclusively" or "essentially" so. These are what I have called non-unique connection geographical indications. According to the Regulation's recitals, this two tier system was appropriate because of "existing practices" in EU


member states77 -- in short neither the French nor the Germans would give up their own approach to the issue. Article 2(3) provides for indirect designations of origin at least as to "names" (not necessarily symbols). More interestingly, Article 2(4) allows for some geographical indications to be protected even "where the raw materials of the products concerned come from a geographical area larger than or different from the processing area."78 At first blush, this appears to be the result of lobbying by interests who realized that their product "inputs" would disqualify them from the strict standards of Article 2(2)(a). Article 5(1) provides that registrations under the Origin Regulation are to be given to groups or associations of "producers and/or processors working with the same agricultural product or foodstuff," although in exceptional circumstances a natural or legal person can apply for registration. Application for registration is done via an EU Member State's government to the Commission.79 After an application is received, the Commission will then entertain an objection from any Member States or "any 'legitimately concerned natural or legal person'"80 Successful registration results in a "protected designation of origin" (or "PDO") or a "protected geographical indication" (or "PGI").81 Article 13(1) establishes the protection enjoyed by PGIs and PDOs; there is no differentiation between the two:

"Registered names shall be protected against: (a) any direct or indirect commercial use in respect of products not

covered by the registration insofar as those products are comparable to the products registered under that name or insofar as using the name exploits the reputation of the protected name;

(b) any misuse, imitation or evocation, even if the true origin of the product is indicated or if the protected name is translated or

_________________________________________________________________

77 1992 Origins Regulation, supra note ___ at 208/2. 78 This impression is reinforced by Article 2(7) which limits the 2(4) exception to applications lodged "within

two years of the entry into force of this Regulation," obviously intending to grandfather in certain producer(s). EU Origin Regulation, supra note at art. 5, at 208/3.

79 1992 Origin Regulation, art. 5; see also In re Pistre and Others, E.U. Court of Justice case C 321-324/94, [1997] 2 C.M.L.R. 565, 573.

80 In re Pistre and Other Opinion of Advocate-General Jacobs, para. 20, supra note ___ at 573 81 In re Pistre and Other Opinion of Advocate-General Jacobs, para. 21, supra note ___ at 573


accompanied by an expression such as 'style,' 'type,' 'method,' 'as produced in,' 'imitation' or similar;

(c) any other false or misleading indication as to the provenance, origin, nature, or essential qualities of the product, on the inner or outer packaging, advertising material or documents relating to the product concerned, and the packaging of the product in a container liable to convey a false impression as to its origin."82

Finally, there is a catch all provision for "any other practice liable to mislead the public as to the true origin of [a] product."83 It should be clear that this list mixes consumer-oriented standards (all of which involve different probabilities of deception or misleading) with producer--oriented standards that form purer property rights over a word, i.e. what use on any unauthorized product would NOT arguably "exploits the reputation of the protected name"? The Commission has taken the position that the EU-level registration system pre-empts national registration systems, but some commentators and at least one EU Member State, Italy, have argued otherwise.84 Examples of protected geographical names under the Origin Regulation are Orkney beef [UK], jambon d'Ardennes [Belgium], Roquefort cheese [France], and Jersey Royal potatoes [UK]. Professor Andre Bertrand reasons that the more restrictive definition of a “protected designation of origin” modified French law vis-à-vis the definition of an appellation d’origine, transferring the essentiality requirement into French law.85 In contrast, EU regulations concerning wine GIs exist in an environment in which “the rules governing the common organization of the market in wine are extremely complex.”86 Article 50 of the 1999 Wine Regulation gives EU member states more general directions to “take all necessary measures” to protect geographical indications for wine from third countries in accordance with Articles 23 and 24 of TRIPS. Article 51 through 53, in combination with Annexes VII and VIII, then create a system that leaves most control in the hands of the member _________________________________________________________________

82 1992 Origins Regulation, art. 13(1), supra note ___ at 208/6. 83 1992 Origins Regulation, art. 13(1)(d), supra note ___ at 208/6. 84 Beier and Knaak, The Protection of Direct and Indirect Geographical Indications of source in Germany

and the European Community, 25 IIC No.1/1994. 85 ANDRE BERTRAND, LE DROIT DES MARQUES, DES SIGNES DISTINCTIFS ET DES NOMS DE DOMAINE, §3.44 at

145 (CEDAT, 2002) 86 1999 Wine Regulation, supra note __, Recital 10 at 2.


states to “use the name of a specified region” to designate wines from that region.87 This allows the French, Italian, and other appellation systems to apply to wines along the same lines as the framework provided by the Origins Regulation.

III. THE TRIPS PROVISIONS ON GEOGRAPHICAL INDICATIONS

The negotiation of the TRIPS Agreement has been described and dissected in detail by several writers and commentators.88 Sometimes geographical indications is pointed out as a unique EU v. U.S. debate against a general backdrop of U.S./Japan/EU. But geographical indications was just one area where there were tensions between the major developed economies -- others included rental rights on music, basic elements of patent law, and certain issues related to audiovisual works.89 The European Union's interest in protecting geographical indications came into the Uruguay Round negotiations as early as 1987, when the Europeans proposed "guidelines" for negotiating an intellectual property component in the next GATT trade round.90 But it was not until 1990 -- and the introduction of draft treaty texts -- that the contours of the debate crystallized. The critical texts for our purposes are the European Communities' March 1990 _________________________________________________________________

87 1999 Wine Regulation, supra note __, Article 52 at 27. 88 TERENCE P. STEWART, 2 THE GATT URUGUAY ROUND, A NEGOTIATING HISTORY, 2245 - 2313 [chapter on

TRIPs] (1993); FROM GATT TO TRIPS – THE AGREEMENT ON TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS (edited by Freidrich-Karl Beier and Gerhard Schricker) 135 – 139 (1996); see also Conrad; supra note ___ at __; See generally MICHAEL P. RYAN, KNOWLEDGE DIPLOMACY: GLOBAL COMPETITION AND THE POLITICS OF INTELLECTUAL PROPERTY (1997); SUSAN K. SELL, POWER AND IDEAS: NORTH-SOUTH POLITICS OF INTELLECTUAL PROPERTY AND ANTITRUST (1998); JAYASHREE WATAL, INTELLECTUAL PROPERTY RIGHTS IN THE WTO AND DEVELOPING COUNTRIES 9-47 (2001) (detailing the North-South negotiation process); Correa, supra note ____ at 3 (noting that “[I]ndustrialized countries forced developing countries to initiate negotiation of an agreement on TRIPS with the clear objective of universalizing the standards of IPR protection that the former had incorporated in their legislation . . . .”); Marci A. Hamilton, The TRIPS Agreement: Imperialistic, Outdated, and Overprotective, 29 VAND. J. TRANSNAT’L L. 613 (1996).

89 Stewart, supra note ___ at 2313. 90 Guidelines Proposed by the European Communities for the Negotiation of Trade-Related Aspects of

Intellectual Property Rights, GATT Doc. No. MTN.GNG/NG11/W/16 (November 20, 1987) and Submissions from Participants on Trade Problems Encountered in Connection with Intellectual Property Rights, GATT Doc. No. MTN.GNG/NG11/W/7 (May 29, 1987) at 2-3 (European Union submitting that "[t]he protection of appellations of origin and of other geographical indications is of fundamental


draft ("EU draft"),91 the United States' May 1990 draft ("US draft"),92 and the merger/compromise of these conflicting approaches in the draft presented by GATT Director Arthur Dunkel on December 20, 1991 (the "Dunkel Draft").93 The initial US draft sought to limit protection of geographical indications in three ways: only for wines, only when they were "non-generic" and only when the public was misled or deceived:

"Contracting parties shall provide protection for non-generic appellations of origin for wines by prohibiting their use when such use would mislead the public as to the true geographic origin of the wine."94

While this language implicitly confronted the EU's desire for the United States to turn back the clock on the "genericization" in North America of terms like "chablis" and "champagne," the broader differences become apparent when one looks at the proposal in the EU draft:

"Geographical indications shall be protected against any use which constitutes an act of unfair competition, including use which is susceptible to mislead the public as to the true origin of the product. [sic] Shall notably be considered to constitute such:

importance" and that “the wine and spirit sector is one which is particularly vulnerable to imitation, counterfeit and usurpation [which causes] damage not only to producers, . . . but also to consumers. . . .")

91 Draft Agreement on Trade-Related Aspects of Intellectual Property Rights, Communication from the European Community, GATT document MTN.GNG/NG11/W/68 (March 29, 1990), reprinted in 10 WIPR 128 (1990) [hereinafter "EU Draft"].

92 Draft Agreement on the Trade-Related Aspects of Intellectual Property Rights, Communication from the United States, GATT document MTN.GNG/NG11/W/70 (May 11, 1990), reprinted in 10 WIPR 128 (1990) [hereinafter "US Draft"].

93 TRIPs (Annex III), DRAFT FINAL ACT EMBODYING THE RESULTS OF THE URUGUAY ROUND OF MULTILATERAL TRADE NEGOTIATIONS, GATT Doc. No. MTN.TNC/W/FA (December 20, 1991) GATT Secretariat UR-91-0185 [hereinafter "Dunkel Draft"]. There was also a draft treaty text submitted to the GATT Brussels Ministerial meeting in December 1990 which had some bearing on the GI issue, see Agreement on Trade-Related Aspects of Intellectual Property Rights, Including Trade in Counterfeit Goods in Draft Final Act Embodying the Results of the Uruguay Round of Multilateral Trade Negotiations, GATT Doc. No. MTN. TNC/W/35/Rev.1 (December 3, 1990) {hereinafter "Brussels Draft"}. In 1990, there were three other draft treaty texts introduced – by Switzerland, Japan, and a coalition of developing countries [including Argentina, Brazil, Nigeria, Egypt, China, Chile, and Tanzania], but those three additional drafts were not central to the geographical indications issues.

94 US Draft, supra note ___ at art. 19.


– “any direct or indirect use in trade in respect of products not coming from the place indicated or evoked by the geographical indication in question;

– “any usurpation, imitation or evocation, even where the true origin of the product is indicated or the appellation or designation is used in translation or accompanied by expressions such as 'kind,' 'type,' 'style,' 'imitation,' or the like;

– "the use of any means in the designation or presentation of the product likely to suggest a link between the product and any geographical area other than the true place of origin." 95

Not surprisingly, this proposal is reminiscent of Article 13 of the EU Origins Regulation which was finalized ___ months later. In addition, the EU draft included a specific definition of "geographical indications" (discussed below) and a separate article on steps a country could take to prevent a geographical indication from becoming generic.96 The EU draft proposal had enormous breadth. First, the EU draft prohibition covered any "act of unfair competition, . . . including use which is susceptible to mislead the public" making it clear that “unfair competition” was a concept more extensive than – and decoupled from – consumer confusion. Second, the definition of GI was not limited to verbal indications. Third, the prohibition on any "use of any means in the designation or presentation of the product likely to suggest a link between the product and any geographical area other than the true place of origin" is very broad. Would a chocolate which says "Girardelli – San Francisco 1881" be liable under this final criterion because Girardelli chocolates are now principally made on the other side of the bay in San Leandro? (Consider the examples in the ‘virtual supermarket’ discussion, infra.) By November 1991, it had become clear that the basic protection of all geographical indications would have to be at a lower level than those sought by the EU. This can be inferred from the November 1991 working paper of negotiations chairman Arthur Dunkel which identified twenty issues concerning the level of intellectual property protection that had to be resolved before proceeding with treaty drafting. On the topic of geographical indications, the working paper identified the critical issue as being whether wines and spirits should be granted _________________________________________________________________

95 EU Draft, supra note ___ at art. 20(1) 96 EU Draft, supra note ___ at art. 19 and art. 21, respectively. [ELABORATE]


additional protection.97 This question was answered, at least for political purposes, in the affirmative in the December 1991 Dunkel Draft. The Dunkel Draft was presented to negotiators as a package, for "up or down" approval. At this juncture, the United States was focused on issues of importance to the pharmaceutical and motion picture industries.98 Further American concerns about Articles 22-24 became muted. In its final form, the TRIPS Agreement's protection of geographical indications can be thought of as having two broad effects. First, there is the extension of the unfair competition components of the Paris Convention to apply to geographical indications (through TRIPS Article 22). Second, there are additional GI protections established in TRIPS Articles 23-24. This additional menu of protection can itself be thought of as having four components: (a) the additional obligation to protect wine and spirits geographical indications in

Article 23; (b) limitations and exceptions to these (a) and (b) obligations in Article 24(4) -

(9); (c) the obligation to conduct further negotiations to protect wine and spirit

geographical indications in Article 23 (4) and 24 (1). Each of these is elaborated below. At the outset, we should be clear what TRIPS does not do. The TRIPS Agreement is silent as to the mechanism of protection; it does not require the establishment of geographical indications or appellations of origin "as such". This open-endedness, if not ambiguity, is the obvious result of the two systems at issue. Article 18 of the US draft had proposed forcing countries to protect geographical indications "by providing for their registration as certification or collective marks."99 This was a non-starter for continental systems with appellation d'origine laws and was probably proposed by the U.S. for just that purpose: to emphasize that either side could insist that the other side change its law. The natural upshot of the dueling _________________________________________________________________

97 Progress of Work in Negotiating Groups: Stock-Taking, GATT Doc. No. MTN.TNC/W/89/Add.1 (November 7, 1991); See also Stewart, supra note ___ at 2279.

98 See Stewart, supra note ___ at 2284. 99 US Draft, supra note ___ at art. 18.


drafts was a search for treaty language that would allow each country to fulfill these international legal obligations through their own particular domestic law tools.

A. Article 22(1)

Article 22 provides the principle TRIPS protection for GIs. Article 22(1) gives a definition of geographical indications and has two elements that warrant our attention as developments of international standards beyond what existed prior to TRIPS.

1. The definition of a "geographical indication"

The definition of a geographical indication in Article 22 is worth studying because it is now unquestionably the international legal norm in this area and because it differs from both prior international definitions and the definition in many domestic laws. Article 22(1) provides:

"Geographical indications are for purposes of this Agreement, indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation, or other characteristic of the good is essentially attributable to its geographical origin."

There are a couple important things to note about this definition. First, it is not limited to verbal designations, so images and packaging are included. Second, this provision is not limited to food stuffs, bu

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